In contrast to many countries, Vietnam does not allow parties to file an opposition against a patent once it has been granted. Instead, if organizations or individuals wish to contest the validity of a granted Vietnamese patent, they may submit an invalidation request to the Intellectual Property Office of Vietnam (IPVN). In terms of opposition, it is only permissible to apply for pending patent applications. Under the new patent provisions in Vietnam, organizations or individuals who believe that the subject matter of a pending patent application may conflict with or adversely impact their legitimate rights and interests, or that it fails to satisfy the criteria for patentability, are empowered to challenge these applications. This challenge can be executed through one of two actions: (i) by submitting their opinions, along with supporting documents, to the IPVN, indicating that it is not advisable to grant a patent on the application (hereafter referred to as “third-party observations”); OR (ii) by filing a formal opposition on the granting of a patent (hereafter referred to as “third-party oppositions”).
Previously, the only available mechanism to challenge pending patent applications was through third-party observations, which involved submitting a third-party opinion and relevant documentation to the IPVN under Article 112 of the Law on Intellectual Property (Action (i) above). The observation process allowed the IPVN to consider whether or not to forward the third-party opinion to the applicant for their comments. If the IPVN found the opinion well-founded, they would forward it; otherwise, the opinion would be disregarded without requiring feedback from the third-party. For example, if the opinion relates to the right to file the patent application, the IPVN often forwards the opinion to the applicant, but if the opinion relates to patentability or other issues, the IPVN might not forward it depending on their consideration. Therefore, under the old provisions, the third-party observations served merely as reference sources, lacking any engagement needed from the IPVN.
The amendments to the intellectual property provisions introduced by the amended Law on Intellectual Property (hereafter referred to as “the amended IP Law”), which took effect on 1 January 2023, along with Decree 65/2023/ND-CP effective on 23 August 2023, and Circular 23/2023/TT-BKHCN that came into force on 30 November 2023, bring significant changes and additions to the IP system. Notably, one of the amendments is to greatly strengthen the role of the third-party and establish a new formal mechanism for opposing patent applications, ensuring fair protection for legitimate rights of holders (Action (ii) above). This dual mechanism allows third-parties not only to express their opinions as they previously could but also to file formal oppositions against the granting of a patent within designated timeframe as stipulated in Article 112a of the amended IP Law, and the IPVN is responsible for resolving these oppositions and communicating the results to the relevant parties, representing a significant advancement in the protection of patent rights, beyond merely serving as reference sources like the third-party observations.
While both actions of submitting third-party observations and filing an opposition arise once a patent application is published in the Industrial Property Official Gazette, there are some distinctions to note as follows.
- Timeframe for each action:
– For a third-party observation: it must be submitted to the IPVN after the publication date of the patent application and before the granting date of the patent.
– For a third-party opposition: it must be submitted within nine months from the publication date of the patent application, establishing a strict timeframe.
- The IPVN’s responsibilities in handling each action:
– For a third-party observation: the IPVN will not have to inform the third-party of the results of considering the opinion.
– For an opposition: the IPVN will have to examine an opposition and inform the third-party of the examination results.
Opposition Procedure under Article 112a of the amended IP Law
It is important to note that while third-party observations serve merely as a reference in the examination of a patent application, the procedure for opposing a patent application is distinct and independent.
Under Article 112a of the amended IP Law and its corresponding provisions in Circular 23/2023/TT-BKHCN, upon receiving a third-party opposition, the IPVN is required to initiate a specific procedure similar to that for invalidation, termination, or appeal. The IPVN will forward the opposition to the patent applicant and set a 2-month deadline for the applicant’s comments. If necessary, the IPVN may then forward the applicant’s comments to the third-party and set another 2-month deadline for their further comments. Also, the IPVN may arrange direct discussions between the two parties. Then, in consideration of the information, evidence, and arguments provided by the two parties, the IPVN will settle the opposition and send the settlement result as well as the result of the substantive examination of the corresponding patent application to the third-party.
In case the third-party opposition is filed based on the right to file the patent application, the IPVN will advise the third-party to pursue the case in Court under the Civil Procedure Code, unless there are clear basics to determine that the patent applicant has no right to file the application in accordance with the amended IP Law. The third-party will have two months to submit a copy of the court’s acceptance notice to the IPVN. Upon receiving the copy of the court’s acceptance notice, the IPVN will suspend the examination of the patent application until the court’s verdict is issued. The patent application will then be settled by the IPVN in accordance with the court’s verdict. If no court acceptance notice of the case is submitted to the IPVN within the two-month deadline, the third-party opposition will be considered withdrawn, and the application will proceed as usual (without any opposition).
Observation or Opposition? What actions should be taken?
Both observation and opposition enable third-parties to challenge pending patent applications. However, a third-party opposition provides a more structured and interactive framework for engagement between the parties involved. In contrast, a third-party observation is a less formal process.
Notably, the IPVN treats observations as informational references during the examination process, meaning the third-party will not receive formal notifications about the examination result of the application. Therefore, observations typically carry less persuasive weight than oppositions, which require associated fees and a specific procedure where both parties can present their comments/arguments. In addition, the IPVN is obligated to settle the opposition and inform the third-party of the settlement alongside the substantive examination results.
It is clear that both mechanisms enabling the third-parties to challenge the pending patent applications are vital to the Vietnamese patent prosecution framework. Observations provide a flexible and cost-effective way for parties to highlight potential conflicts early in the examination process, while oppositions offer a formal platform for challenging patent applications. Engaging in an opposition allows third-parties to protect their legitimate patent rights against conflicting inventions.
The selection between an observation or an opposition often depends on practical considerations. For simple cases, a third-party observation might be suitable. However, when seeking a definitive resolution, pursuing an opposition is often the more effective option. In addition, if the 9-month period from the application’s publication date has passed, we can only submit the observations.
Conclusion
Amending the legal framework for third-party opinions and oppositions can improve the clarity and transparency of the Vietnamese patent system, thereby enhancing the protection of intellectual property rights.
The recent amendments to patent challenge provisions in Vietnam provide significant opportunities for the third-parties to actively participate in the patent examination process. These amendments improve transparency and consolidate the integrity of the patent system, benefiting both innovators and the public. Therefore, it is crucial for all stakeholders to strategically utilize these amendments to protect their interests within the Vietnamese IP landscape./.
By Do Tuyet Nhung
Deputy Director of the patent department
